WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chubb INA Holdings Inc. v. Privacy Administrator, Anonymize, Inc
Case No. D2020-1481
1. The Parties
The Complainant is Chubb INA Holdings Inc., United States of America (“United States”), represented by Fish & Richardson P.C., United States.
The Respondent is Privacy Administrator, Anonymize, Inc, United States.
2. The Domain Names and Registrar
The disputed domain names <chubbsmallbusines.com> and <chubsmallbusiness.com> are registered with Epic, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 10, 2020 and June 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information. The Registrar further represented to the Center that the Respondent is a privacy service provider and a “client” of the Registrar.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.
The Center appointed William R. Towns as the sole panelist in this matter on July 17, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a publicly traded property, casualty, and commercial insurer. The Complainant, formed through its predecessors in interest in 1967, has substantial operations in the United States as well as in 53 other countries and territories around the world, and has been listed on the New York Stock Exchange since 1984.
The Complainant is the holder of multiple United States trademark registrations for CHUBB and CHUBB‑ formative marks issued by the United States Patent and Trademark Office (“USPTO”), including the following:
CHUBB – United States Reg. No. 1729813, filed January 25, 1991, and registered on November 3, 1992 (first use 1969);
CHUBB (with logo) – United States Reg. No. 1697997, filed January 24, 1991, and registered on June 30, 1992;
CHUBB (stylized) – United States Reg. No. 5157396, filed December 10, 2015, and registered on March 7, 2017;
INTEGRITY BY CHUBB – United States Reg. No. 2940658, filed May 17, 2002, and registered on April 12, 2005;
MOVE UP TO CHUBB – United States Reg. No. 5146537, filed July 18, 2016, and registered on February 21, 2017.
The Complainant also is the owner of the <chubb.com> domain name, registered on September 7, 1995, and used with the Complainant’s official website at “www.chubb.com”.
The disputed domain names were registered on September 24, 2019, according to the Registrar’s WhoIs records. The disputed domain names resolve to parked pages with pay-per-click (“PPC”) links to other websites promoting competing insurance products.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainants CHUBB and CHUBB-formative marks. The Complainant remarks that one of the disputed domain names consists of the omission of the second letter “b” in the Complainant’s CHUBB mark, while the other disputed domain name omits the second letter “s” in the “business”. The Complainant refers to this as typosquatting, and maintains that the addition of the descriptive term “small business” (misspelled or otherwise) does not serve to distinguish the disputed domain names from the Complainant’s marks.
The Complainant asserts that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Complainant maintains that the Respondent is not commonly known by the disputed domain names, and notes that the Respondent concealed his identity through use of a privacy service when registering disputed domain names. The Complainant states that the Respondent has not been granted rights to use the Complainant’s famous CHUBB or CHUBB-formative marks, and further submits that the Respondent has neither used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or service.
The Complainant calls attention to the Respondent’s use of the disputed domain names with PPC advertising links for insurance services, which according to the Complainant impermissibly trades on the good will of the Complainant’s famous CHUBB and CHUBB-formative marks. The Complainant submits this is neither a legitimate noncommercial or other fair use of the disputed domain names.
The Complainant maintains that the disputed domain names have been registered and used in bad faith. The Complainant reiterates that its CHUBB mark has been used in commerce since as early as 1969, and, given the Complainant’s international success, maintains it is clear the Respondent registered the disputed domain names with full knowledge of the Complainant’s CHUBB and CHUBB-formative marks. The Complainant asserts that the Respondent’s awareness of the Complainant’s CHUBB and CHUBB-formative marks is evinced by the Respondent’s deliberate misspelling of domain names reflecting the Complainant’s marks, and is presumptive of bad faith registration and use of the disputed domain names.
The Complainant submits that the Respondent’s use of the disputed domain names with PPC advertising links for insurance services is conclusive of the respondent’s bad faith intent, for commercial gain, to create a likelihood of confusion with the Complainant’s well known marks. The Complainant submits that the Respondent registered the disputed domain names to attract users for commercial gain by creating a likelihood of confusion as to the source of or affiliation with the Complainant. The Complainant also contends that the Respondent’s passive holding of the disputed domain names for use with PPC parked pages constitutes bad faith use, as the disputed domain names appropriate the Complainant’s famous mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Issue: Respondent Identity
Paragraph 1 of the Rules defines the respondent as “the holder of a domain name registration against which a complaint is initiated.” In many instances, however, the WhoIs-listed registrant is a “privacy” or “proxy” registration service. Paragraph 4(b) of the Rules provides that updates to the respondent’s data, including a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two (2) business day period concludes or before the Registrar verifies the information requested and confirms the lock to the UDRP Provider, whichever occurs first. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 4.4.
As noted earlier, the Registrar has represented that the Respondent is both a privacy service provider and a “client” of the Registrar. The Panel notes that in terms of underlying respondent identity, UDRP panels have treated privacy and proxy services as practical equivalents for purposes of the Policy. Accordingly, the fact that such services may be used to prevent a complainant and panel from knowing the identity of the underlying registrant does not prevent panel assessment of the UDRP elements. See WIPO Overview 3.0, section 3.6 and cases cited therein. The Panel further notes, in reference to paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement, that as a WhoIs-listed registrant the privacy or proxy service may be subject to liability for any use of the disputed domain name when electing not to disclose the contact information of the underlying beneficial registrant. See WIPO Overview 3.0, section 4.4.6 and cases cited therein.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is concerned with providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0, section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names <chubbsmallbusines.com> and <chubsmallbusiness.com> are confusingly similar to the Complainant’s CHUBB mark, in which the Complainant has established rights through registration and long and extensive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s CHUBB mark is recognizable in each of the disputed domain names.2 Neither the omission in the disputed domain name <chubbsmallbusines.com>of the second letter “s” in “business” or omission in the disputed domain name <chubsmallbusiness.com> of the second letter “b” in “chubb” serve to dispel the confusing similarity of the disputed domain names to the Complainant’s mark, and as such constitute typosquatting.3 When the relevant trademark is recognizable in the disputed domain names the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.4 Generic Top-Level Domains (“gTLDs”) generally are typically disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain names under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s CHUBB mark. Nevertheless, the Respondent registered the disputed domain names, which are confusingly similar to the Complainant’s mark, has knowingly engaged in typosquatting, and is using the disputed domain names to generate PPC links to third-party websites offering insurance products similar to those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s CHUBB mark when registering the disputed domain names. The record is convincing that the Respondent registered the disputed domain names with the aim of exploiting and profiting from the Complainant’s mark through the generation of revenue from PPC advertising. UDRP panels consistently have found that the use of a domain name to host a parked page comprising PPC links does not constitute a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. See, e.g., No Limit, LLC and Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC, WIPO Case No. D2020-0685; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Having regard to the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Further, there is no indication that the Respondent has been commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra case”). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel finds that the Respondent was aware of the Complainant and had the Complainant’s well-known CHUBB mark in mind when registering the disputed domain names. The Panel concludes that the Respondent has engaged in the bad faith practice of typosquatting, seeking to capitalize on the reputation and goodwill of the Complainant’s marks in order to mislead Internet users and profit from the generation of PPC advertising revenues.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <chubbsmallbusines.com> and <chubsmallbusiness.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 24, 2020
1 See WIPO Overview 3.0, section 1.7.
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 Typosquatting is characterized by a domain name consisting of a common, obvious, or intentional misspelling of a trademark, and is generally held to be confusingly similar for purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.9, and relevant decisions.
4 See WIPO Overview 3.0, section 1.8.
5 See WIPO Overview 3.0, sections 1.11, and relevant decisions.